Trademark Audits: What Registrants Should Expect

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In 2017, the USPTO initiated an aggressive auditing program of U.S. trademark registrations at the time of maintenance filings. The goal of the program is to ensure the accuracy and integrity of the U.S. register by removing or narrowing registrations that include claims beyond the scope of the registrant’s actual use of its mark in U.S. commerce. The Office is on pace to audit 5000 registrations in 2020 so registrants who have not been tagged as yet should be prepared for an audit in the future.

By way of background, the U.S. system of protection for trademarks, unlike many non-U.S. systems, requires the trademark owner to actually use its mark in U.S. commerce with all the goods or services specified in the registration. Accordingly, to maintain an issued registration the registrant must declare, under oath, that all of the specified goods or services claimed in registration are being provided under the mark to U.S. customers at the time of filing registrant’s Section 8 Declaration of Continued Use (due between the 5th and 6th and years after registration) and Renewal (due every 10 years after registration) filings are due. This “actual use” requirement applies regardless of the original filing basis for the application. The goal of the auditing program is to ensure that trademark owners are maintaining the use of marks consistent with the scope of the claimed goods and services in the registration. Such accuracy ensures fairness and the continued viability of the Register.

Are All U.S. Registrations Subject to Audit?

No. Under the program, only registrations for which maintenance filings have been submitted are subject to audit. Of these, only those registrations that fulfill at least one of the following criteria may be audited:

  1. The registration includes at least one class of goods, with four or more goods/services listed in said class; or
  2. The registration includes at least two classes of goods, with at least two or more goods/services in each class.

What Happens If My Registration Receives an Audit?

If the registration is selected for audit, the registrant will be advised of the audit after filing its maintenance document in a “post-registration office action.” In the office action, the examiner will select two additional listed goods and services for each audited class for which the examiner requires “proof of use.” Registrants will have six months to respond to the action.

How do I Provide Proof of Use? 

Evidence of use is the same as is required for the maintenance filing generally. The only difference is that when you file the maintenance filing, the registrant is only required to provide one example to support each class. Under the audit, the Examiner will ask to see evidence of use with other items in the class that were not provided at the time of the maintenance filing.  According to the TM Office Auditing website FAQ, the proof of use must clearly show how the registrant is using the mark in commerce with the audited goods and services.

Examples of Appropriate Evidence of Use of Mark for Goods:

  • Photographs that show the mark on a tag or label affixed to the goods
  • Screen shots of web pages with the URL and access or print date that show the mark being used in connection with the goods at their point of sale
  • Photographs of the mark on packaging where the goods are visible through the packaging

Examples of Appropriate Samples of use for Services:

  • Copies of brochures or flyers where the mark is used in advertising the services
  • Photographs of the mark on retail store or restaurant signage
  • Screen shots of web pages with the URL and access or print date where the mark is used in the actual sale or advertising of the services.

Responding to the Audit:

Any response to the audit other than providing the required proofs of use—including deleting the audited goods/services—will result in an audit of the entire registration. In other words, if a registrant does not have proof of use for the audited goods/services, it will need to be prepared to delete or provide proofs of use for each and every other good/service in its registration or the entire registration will be cancelled.

Takeaways/Best Practices:

As a best practice, trademark registrants should:

  • Routinely self-audit usage of their marks as compared with claims in issued registrations to ensure use and continued use of marks on the goods and services that are listed in the registration;
  • Take care to maintain consistent usage of marks and identify, segregate and save evidence of use on the web, packaging and related collateral so that you have items at the ready when it comes time to prepare maintenance documents;
  • Amend registrations at the time of filing the maintenance document(s) to ensure that any audit request that may come can be responded to with readily-available evidence.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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